Ex Parte Flaherty et al

Patent Trial and Appeal Board

Sep 18, 2017

13310291 (P.T.A.B. Sep. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/310,291 12/02/2011 John P. Flaherty 766P001C5 2572
42754 7590 09/18/2017
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Wes thorough, MA 01581
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
09/18/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. FLAHERTY and WILLIAM SCOTT OBER
Appeal 2016-008183
Application 13/310,291
Technology Center 3600
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John P. Flaherty and William Scott Ober (Appellants)1 seek our
review under 35 U.S.C. § 134 of the Examiner’s rejection2 under 35 U.S.C.
§ 103(a) of claims 1—4 as unpatentable over Trafixigns (GB 433,732, pub.
Aug. 20, 1935), Szekely (US 5,303,669, iss. Apr. 19, 1994), and Jeppson
(US 1,458,708, iss. June 12, 1923).3 We have jurisdiction under
35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is ADA Solutions,
Incorporated. Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated February 9, 2015 (“Final Act.”).
3 Claims 5 and 6 were canceled. See Amendment filed December 23, 2014.
Appeal 2016-008183
Application 13/310,291
We AFFIRM.4
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.5
1. A replaceable, wet-set tactile warning surf ace unit embedded
in concrete, comprising:
a unitary resinous composite body defining an upper
surface and a lower surface, the body comprising a series of
raised projections on its upper surface, a plurality of projecting
asperities disposed on the upper surface and on the top of the
raised projections, and a plurality of spaced through-holes
passing through the body; anchor members coupled to the unit
below the through-holes by flat-head fasteners, wherein the
anchor members have a first portion extending radially outward
to a greater extent than a second portion located between the first
portion and the lower surface to help embed the anchors in fresh
concrete as the concrete sets and wherein the flat-head fasteners
pass through the through-holes and lie essentially flush with the
upper surface; a flange extending from the lower surface; and a
bottomless vent located underneath the body and extending
essentially up to the lower surface that allows air to escape from
underneath the unit when it is installed in said concrete and that
prevents the body from being permanently embedded in said
concrete; said concrete supporting said lower surface of said unit,
wherein the region between said lower surface and said concrete
4 Appellants state that this appeal is related to Inter partes Reexamination
No. 95/001,775 of U.S. 8,028,491 B2, which is a continuation of U.S.
7,779,581 B2; to Appeal 2016-007606 in Application 13/251,620; Appeal
2016-008180 in Application 13/310,248; and Appeal 2016-008182 in
Application 13/310,265.
5 We note that Inter partes Reexamination Certificate No. U.S. 7,779,581
Cl, issued July 13, 2015, claim 1—reciting substantially the same
replaceable, wet-set tactile warning surface unit for installation in fresh
concrete, as recited in appealed claim 1—was canceled, inter alia, for being
anticipated by Trafixigns. See Action Closing Prosecution, mailed July 3,
2012, at pages 15—17 and 59—60.
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Appeal 2016-008183
Application 13/310,291
is devoid of air cavities, and said bottomless vent is filled with
said concrete.
ANALYSIS
Obviousness of Claims 1—4 over Trafixigns, Szekely, and Jeppson
Appellants argue claims 1—4 together in contesting the rejection of
these claims as obvious over Trafixigns, Szekely, and Jeppson. See Appeal
Br. 8—13; Reply Br. 5—6. We select claim 1 as the representative claim for
this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. §
41.37(c)(l)(iv).
The Examiner finds that Trafixigns discloses substantially all the
limitations of a replaceable, wet-set tactile warning surface unit (panel) as
recited by claim 1, including, inter alia, a unitary body, spaced through-
holes passing through the body, “anchor members (21) coupled to the unit
below the through-holes by flat head fasteners (22) that pass through the
through-holes,” and
a bottomless vent (10) located underneath the body and
extending essentially up to the lower surface (see Fig. 2) that
allows air to escape from underneath the unit when it is installed
in concrete and that prevents the body from being permanently
embedded in concrete (functional language fully capable of
being met by the prior art).[6]
Final Act. 3^4. The Examiner also points out that “the bottomless
vent is filled with said concrete (page 2, lines 95 and following, as the
6 It is well established that “[a]n intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003).
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Appeal 2016-008183
Application 13/310,291
system is keyed to the surface of the road, the key is formed by the surface
of the road, which would be concrete.).” Id. at 4. Although acknowledging
“Trafixigns does not specifically disclose that the tile is embedded in
concrete,” the Examiner reasons that because “the anchors may be
embedded in [the] concrete (page 2, line 1) and the panel may be ‘keyed’ to
the surface of the road (page 2, line[s] 95-100),” that it would have been
obvious “to have the panel embedded in concrete as a common medium for
the embedding of the anchors,” noting that “it is common knowledge in the
art to have drivable surfaces made of concrete.” Id. at 4. Furthermore, the
Examiner explains that “embedding the member in concrete results in said
concrete supporting said lower surface of said unit, wherein the region
between said lower surface and said concrete is devoid of air cavities (this
would occur due to vents 10).” Id. at 6.
While also acknowledging that Trafixigns “does not disclose the panel
[being] made [of] resinous composite,” the Examiner finds “Szekely
discloses a similar panel that is made from a thermoset plastic composite
(Col 5, lines 13-20), which typically exists in a resinous form,” and that it
would have been obvious “to have the panel [of Trafixigns] made of a
resinous composite, as such materials are well known in the art for strength,
durability and resistance to corrosion.” Id. at 4.
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellants first contend that “there is no disclosure or
suggestion in Trafixigns that the region between the lower surface and the
concrete is devoid of air cavities,” because “Trafixigns clearly teaches away
from this feature,” pointing to the washers illustrated in Figure 8 of
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Application 13/310,291
Trafixigns. Appeal Br. 8—9. Appellants continue by contending that the
embodiment of Figure 8 “would not function if no air were present under
the plate, and if the concrete under the plate supported the lower surface of
the plate.” Id. at 10—11.
However, we agree with the Examiner that Appellants argue “an
embodiment in Trafixigns that was not of consideration by the [Examiner] in
the rejection,” pointing out the washers (i.e., washers 26) in Figure 8 “are
not required, as exemplified [by Figure] 7,” and explaining that “Trafixigns
is clear: ‘the plate may be positioned in or on the road.’” Ans. 11 (citing
Trafixigns, p. 2,11. 29-30). Appellants also do not explain how optional
washers 26 teach away from having no air cavities between a warning
panel’s lower surface and the road. “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellants next contend “the alleged ‘vents’ of Trafixigns are never
filled with concrete, and never would be,” reasoning that “filling them with
concrete would cause them to fail for their intended purpose of keying the
unit or positioning the unit on the rods or bars.” Appeal Br. 11.
However, the Examiner has the better position, first pointing out that
“Trafixigns is clear: the recesses, ‘may either act to key the plate ... or
may act as positioning means for rods or bars,”’ further explaining that “[a]s
a result of this language, rods or bars are not required.” Ans. 11 (citing
Trafixigns, p. 2,11. 97—100). The Examiner also reasons that Appellants’
position as to the meaning of “keys” is misplaced, explaining that
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Application 13/310,291
[t]he term “keying” (or “key” as a verb) means when the plate is
pressed into the substrate, the substrate fills the voids and gaps
in the portion of the plate that is in contact with the substrate,
hence “keying” the plate to the road. In other words, the substrate
conforms to the shape of the object pressed into it, or is “keyed”
to it.
Id. at 11—12.
Although not disputing “that the phrase ‘key the plate to the surface of
the road’ means [to] position the plate to the surface of the road,” Appellants
“vigorously disagree that this in any way suggests pressing the plate into the
substrate, or that if the plate is pressed into the substrate, the substrate fills
the voids and gaps in the portion of the plate that is in contact with the
substrate as the Examiner alleges.” Reply Br. 6. Appellants, however, do
not provide sufficient evidence for this contention, and a preponderance of
evidence supports the Examiner’s determination that Trafixigns’ plate is
meant to key with the road surface (such that air is vented from recesses 10
upon installation)—not to provide air cavities. See In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) (“Arguments and conclusions unsupported by
factual evidence carry no evidentiary weight”).
Notably, the structure of Trafixigns’ recesses 10 and Appellants’ slots
16 (i.e., as depicted in Figure 10 of the Specification) are the substantially
same, nor do Appellants identity any structural differences between
Trafixigns’ recesses 10 and Appellants’ slots 16. Statements of use or
purpose do not make a claim to a known structure patentable. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Holding that the
appellants’ contention that the claimed structure will be used in a way not
taught by the prior art reference does not have patentable weight if the
structure is already known.).
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Application 13/310,291
Appellants next contend “the claims require a unitary resinous
composite body defining an upper surface and a lower surface,” while
Trafixigns “is a steel plate the upper surface of which is a vitreous material.”
Appeal Br. 13. In particular, Appellants argue that “[cjompletely lacking in
Trafixigns is any teaching or suggestion to make the body . . . from a fiber-
reinforced resin composite material.” Id.
However, Appellants are simply attacking Trafixigns in isolation for
lacking support for findings not relied upon by the Examiner, rather than
addressing the Examiner’s combination of Trafixigns and Szekely.
Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Szekely,
not Trafixigns, was cited for disclosing a “similar panel that is made from a
thermoset plastic composite.” See Final Act 4. As the Examiner again
explains, “[i]t would be obvious to make the panel in Trafixigns from the
material in Szekely for the reasons provided.” Ans. 13.
Based on the foregoing, we sustain the Examiner’s rejection of claims
1—4 over Trafixigns, Szekely, and Jeppson.
DECISION
We AFFIRM the Examiner’s rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(l)(iv).
AFFIRMED
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